England and Wales Court of Appeal (Civil Division) Decisions

IN THE SUPREME COURT OF JUDICATURE
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(MR JUSTICE FERRIS)

		Royal Courts of Justice Strand London W2A 2LL
		22nd April 1998

See also: [1999] EWCA Civ 837

LORD JUSTICE MILLETT: This is an application by the plaintiff in the action, Mr Osaji-Umeaku, for a stay of execution pending his appeal from two orders of Mr Justice Ferris, one made on 30th October l997 and the other on l2th December l997. The applicant's proceedings were dismissed and he was ordered to pay the costs of the action incurred by the respondent. The applicant is appealing those orders and in the meantime he seeks a stay of execution on the order for taxation and payment of the respondent's costs, that being the only effective order which the judge made.

The applicant carries on his activities under the name of the British Foundation for Teaching Entrepreneurship, which is said to be a charity. It is not entirely clear whether that is merely a name for some of the activities which the applicant carries on himself or whether it is a separate and independent body. He brought the proceedings as the registered proprietor of a trade mark which he concedes and asserts that he holds as trustee for the charity.

In l992 an American charity, the respondent, which carries on its activities under the name National Foundation for Teaching Entrepreneurship Inc, opposed the applicant's application for registration of his trade mark on the ground that the two marks were confusingly similar. Proceedings took place before the trade marks registrar who formed the view that the two marks were not confusingly similar. Accordingly, he dismissed the respondent's opposition and allowed the applicant to register his mark. The registration of the trade mark was effected subject to a disclaimer in the following terms:

"Registration of this mark shall give no right to the exclusive use of the words British Foundation for Teaching Entrepreneurship."

In those circumstances the respondent took steps to protect its marks in this country. In July and September l996 it obtained the registration of three trade marks of its own. It is not clear from the papers whether the applicant opposed the respondent's registration of its marks but, if he did oppose it, his opposition was unsuccessful. The applicant then took out an originating summons in the High Court by which he asked for a large number of different remedies which included orders invalidating, revoking, expunging or otherwise deleting the three marks registered in the United Kingdom by the respondent.

On the face of it the only case which the applicant could make to the High Court was that the respondent's marks were confusingly similar to his own and should not have been registered. But, as the judge pointed out, no argument to that effect was presented before him at all; and it would have been difficult for the applicant to advance that argument in the face of the contested hearing which the applicant had won before the trade mark registrar, in which it was held that the two marks were not confusingly similar. Be that as it may, nothing was put before the judge to lay the foundation for the orders which the applicant sought. Accordingly, the judge dismissed the action and, not surprisingly, ordered the applicant and the charity to be jointly and severally liable to pay the costs of the action. The applicant applied for a stay of the order and the judge refused it. The applicant is appealing to this court from those orders of Mr Justice Ferris.

As I have said, the only effective order which the judge made which could be stayed is the order that the applicant and his charity (the English charity) should be jointly and severally liable to pay the respondent's cost of the proceedings in the High Court.

Taxation has not yet begun. The appeal, I am told, is likely to be heard next March; and the question is whether I should stay taxation and payment of the respondent's costs pursuant to Mr Justice Ferris's order because of the existence of the applicant's appeal. The mere fact that an order is under appeal is not in itself a ground for staying execution of the order. This court only stays the execution of orders below pending the hearing of an appeal in very special circumstances. One is where, unless the order below is stayed, compliance with the order will render the appeal nugatory; that is not this case. Another would be where the order required payment by the unsuccessful party to the successful party which the successful party would be unable to repay if the appeal were successful and the order were set aside. No evidence to that effect has been put before me. Another, much rarer, case is where the applicant can show that compliance with the order would stifle his appeal. No evidence to that effect has been put before me. No ground has been shown why I should stay execution of the order for taxation and payment of costs. I should add that in any event it is not my normal practice to stay taxation even where the grounds are made out since the sooner taxation begins the better. I have on occasion been disposed to stay payment of the costs after taxation has been completed. In reality if the respondent to an appeal completes taxation only very shortly before the hearing of the appeal, it is usually unlikely that he would take steps to enforce payment in any event; so that a stay is seldom sought in such circumstances.

Before me the only ground which the applicant has put forward in support of his application for a stay is that the charity is not a party to the action. He says the order for costs should not have been made against the charity. That may or may not be right; but I am not really concerned with the question. The order is that the applicant and the charity should be jointly and severally liable to pay the costs of the action. It is no answer for the applicant to say that the order should not have been made against the charity. Either they are only different names of the same person - that is to say the applicant himself, in which case he is the only party who has been ordered to pay costs - or they are different parties, in which event it is for the charity, separately represented, to apply to set aside the order which has been made against it. The only party before me is the applicant itself, and I am concerned only with so much of the order as affects him. I decline to stay the order.

Accordingly, I will dismiss this application.

Order: Application dismissed with costs.